Chinese Trademark Law: Registration, Protection, and Enforcement

Chinese trademark law is governed by the Trademark Law (Shangbiao Fa, 商标法), originally enacted in 1982 and subsequently amended in 1993, 2001, 2013, and 2019. The law operates on a first-to-file registration system, supplemented by protections for well-known marks and increasingly robust enforcement against bad faith filings.

Registration System

China operates a first-to-file (xian shenqing wei zhu) registration system, under which trademark rights are acquired through registration with the China National Intellectual Property Administration (CNIPA). Registration is not mandatory but is strongly recommended for businesses operating in China, as unregistered marks receive limited protection.

The registration process involves: filing an application with CNIPA; formal examination (approximately 1-2 months); substantive examination (approximately 6-9 months); publication in the Trademark Gazette (three months for opposition); and registration (certificate issued approximately 1-2 months after publication). The total registration period is typically 9-12 months.

Registered trademarks are valid for 10 years from the registration date and may be renewed indefinitely for successive 10-year periods. Registered marks must be used in commerce within three years of registration; failure to use may result in invalidation upon application by a third party.

Well-Known Marks (Zhuming Shangbiao)

Well-known marks (zhuming shangbiao, 驰名商标) receive enhanced protection under Chinese trademark law. A well-known mark is protected against infringement even without registration, and the protection extends to dissimilar goods or services where the use would indicate a connection or harm the mark’s reputation.

Well-known mark status is determined on a case-by-case basis by CNIPA or the courts, considering: the mark’s reputation in the relevant sector; duration and geographic scope of use; advertising expenditure; and history of recognition as a well-known mark. Well-known mark status provides: cross-class protection; protection against dilution; stronger enforcement; and priority in opposition and invalidation proceedings.

The well-known mark system has been criticized for creating incentives for companies to seek recognition for competitive advantage rather than genuine brand protection. The 2013 amendment prohibited the use of well-known mark designations in advertising, seeking to reduce the marketing incentives for seeking recognition.

Bad Faith Filings (E Yi)

Bad faith filings (e yi shenqing, 恶意申请) — where a person files a trademark application without intent to use but to profit from selling or blocking the mark — are a significant problem in China. The Trademark Law amended in 2019 addressed this issue by: prohibiting applications made in bad faith (Article 4); providing that non-use intent is a ground for refusal; and establishing penalties for bad faith applicants.

The SPC has provided guidance on determining bad faith: the applicant’s business activities; prior relationships with the mark owner; the number of marks filed; mark similarity; and the applicant’s conduct in dealings with the mark owner. CNIPA has rejected or invalidated thousands of bad faith applications since the 2019 amendment.

Trademark Squatting

Trademark squatting — the registration of a foreign mark by a local entity before the foreign owner enters the Chinese market — has been a persistent problem. The Apple v. Proview case (2012) was the most prominent example. Apple sought to register the iPad mark in China but found it had been registered by Proview, a Hong Kong company. Apple eventually settled with Proview for USD 60 million, highlighting the costs of failing to register trademarks in China early.

The case prompted many foreign companies to adopt more aggressive trademark registration strategies in China, including registering marks before market entry and monitoring the CNIPA register for potentially conflicting applications.

The Apple v Proview (iPad) Case

The Apple v Proview trademark dispute was the most high-profile trademark case in Chinese history. Proview had registered the iPad mark in China before Apple introduced the iPad. When Apple attempted to register the mark, Proview asserted its prior rights. Apple argued that it had acquired the mark from Proview’s Taiwan subsidiary and that Proview’s mainland registration was invalid.

The Shenzhen court ruled in Proview’s favor, holding that the Taiwan subsidiary did not have authority to transfer the mainland registration and that Proview had valid ownership. Apple appealed, and the Guangdong High Court mediated a settlement of USD 60 million. The case highlighted the importance of careful due diligence in trademark transactions and the risks of the first-to-file system for companies expanding into China.

Opposition Procedure

The opposition procedure allows third parties to challenge trademark applications before registration. Opposition must be filed within three months of publication in the Trademark Gazette. Grounds for opposition include: conflict with prior registered marks; lack of distinctiveness; deceptive or misleading use; bad faith filing; and violation of prior rights.

The opposition procedure provides an efficient mechanism for resolving trademark disputes at the registration stage. The CNIPA Trademark Office hears oppositions and renders decisions. Decisions may be appealed to the CNIPA Review Board and subsequently to the Beijing IP Court. The opposition system has been reformed to streamline procedures and reduce processing times.

Enforcement

Trademark enforcement in China operates through administrative and judicial channels. Administrative enforcement by the Administration for Market Regulation (AMR) is available for clear infringement cases, with remedies including confiscation and destruction of infringing goods and imposition of fines. Administrative enforcement is faster and less expensive than litigation.

Judicial enforcement through the courts provides: preliminary injunctions; damages (including statutory damages up to RMB 5 million and punitive damages up to five times the calculated damages); and orders for destruction of infringing materials. The 2019 amendment strengthened judicial enforcement by increasing damages and improving evidence procedures. Criminal enforcement is available for serious infringement, with penalties including imprisonment and fines.